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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilly ICOS LLC v. Tudor Burden, Burden Marketing

Case No. D2004-0794

1. The Parties

The Complainant is Lilly ICOS LLC, Bruce W. Longbottom, Eli Lilly and Company, Lilly Corporate Center, Indianapolis, Indiana, United States of America, of United States of America, represented by Baker & Daniels, United States of America.

The Respondent is Tudor Burden, Burden Marketing, Kelowna, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names <cialisapcalis.com> and <cialis-viagra.info> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to eNom.

eNom a request for registrar verification in connection with the domain names at issue. On October 1, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2004.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 15, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 8, 2004, the panelist issued to the Complainant a Procedural order requesting clarification as to the third-party trademark rights on the terms “Viagra” and “Apcalis”. Complainant responded to the Procedural Order on December 13, 2004.

4. Factual Background

The Complainant, a limited liability company registered under the laws of the State of Delaware is a joint venture made between ICOS Corporation and Eli Lilly and Company, which owns the trademark CIALIS for a pharmaceutical preparation intended for the treatment of erectile dysfunction. Complainant’s rights in the CIALIS mark goes back as early as June 17, 1999, when it registered its trademark in the US and the Complainant is now the owner of more than 87 registrations of the CIALIS mark covering not less than 117 countries. Furthermore, applications for registration are pending in approximately 24 more countries. The Complainant also registered the domain name <cialis.com> on August 10, 1999, and is using it to advertise and to provide information regarding the pharmaceutical product CIALIS.

Respondent registered the disputed domain names <cialisapcalis.com> on November 19, 2003, and <cialis-viagra.info> on January 21, 2004.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that its use of the CIALIS trademark pre-dates Respondent’s registration of the disputed domain names. Besides, Complainant’s decision to use the Mark to identify its pharmaceutical product was made public around July 2001, as shown by the media coverage of the CIALIS product and therefore well before the registrations of the contested domain names.

The Complainant contends that CIALIS is an invented word and that therefore the mark has a high degree of individuality and inherent distinctiveness.

The Complainant contends that the domain names are confusingly similar to the CIALIS mark because the disputed domain name incorporates entirely Complainant’s distinctive mark. According to the Complainant, Respondent’s addition of the descriptive words “apcalis” to the <cialisapcalis.com> domain name and “viagra” to the <cialis-viagra.info> domain name does not prevent a finding of confusing similarity.

The Complainant contends that the disputed domain names are similar to the mark CIALIS because they both incorporate the mark in its entirety, with the exception of the descriptive term ‘apcalis’ in the <cialisapcalis.com> domain name and the descriptive term ‘viagra’ in the <cialis-viagra.info> domain name. Complainant is of the opinion that Respondent should not be permitted to use its mark in the domain names in a manner that misleads unsophisticated Internet users into believing that Respondent is an authorized distributor or reseller of Complainant’s product.

Rights or Legitimate Interests

The Complainant contends that Respondent has no legitimate right or interest in the disputed domain names. Respondent is trading on the valuable reputation and goodwill of the mark by using it to solicit orders for counterfeit goods passed off as Complainant’s product.

The Complainant contends that Respondent’s use of a domain name that is confusingly similar to the Mark is not a bona fide offering of goods or services. Regarding <cialisapcalis.com>, Respondent’s website provides links to several websites where products passed off as Complainant’s CIALIS product may be purchased. Furthermore, Respondent’s website also displays Complainant’s logo, a picture of a CIALIS brand product packaging and as a result confuses visitors as to Complainant’s affiliation with or sponsorship of the Respondent’s website and the products advertised there. Respondent’s use of the mark on its website is evidence that Respondent knowingly registered the disputed domain name with the intent of misleading and diverting Internet users to the Respondent’s website, and trading on the goodwill established in the mark, for Respondents’ commercial gain.

Regarding <cialis-viagra.info> domain name, Respondent’s provision of hyperlinks on associated websites is indicative of Respondent’s intention to commercially take advantage by using Complainant’s CIALIS mark

The Complainant contends that it has not given Respondent permission, authorization, consent or license to use the mark. By using Complainant’s CIALIS trademark in the domain names, as well as on the websites, Respondent is attempting to confuse consumers as to the source, sponsorship, affiliation and endorsement of the pharmaceutical products advertised on Respondent’s website.

Registered and Used in Bad Faith

The Complainant contends that it has marketed and advertised its CIALIS pharmaceutical product under the CIALIS mark which is a well-known trademark. Respondent has attempted to unfairly capitalize on Complainant’s mark and goodwill. Respondent’s trading on Complainant’s goodwill in the mark, for commercial gain, is evidence of bad faith. Besides, the disputed domain names leads to thinking that Respondent is endorsed by Complainant. Therefore, Respondent did not register the domain names without knowledge of Complainant’s mark and its associated pharmaceutical product.

The Complainant also contends that Respondent made an effort to lead Internet users to believe that the websites are sponsored by and or affiliated with Complainant. In addition to displaying its logo, Respondent includes a picture of a gold colored, ovoid shaped tablet bearing a stylized letter “C” on the right-hand side the home page of the “www.cialisapcalis.com website. Respondent also uses a green and gold color scheme on the websites associated with both domain names and green and gold are two of the dominant colors used by Complainant on its own website.

Finally, the Complainant contends that bad faith is evidenced by Respondent’s use of the disputed domain names in a manner that is potentially harmful to the health of many unsuspecting consumers. Respondent’s website creates the false impression that those who purchase pharmaceutical products from Respondent’s website are buying safe and effective products from Complainant that have been approved by the U.S. Food and Drug Administration (“FDA”) and many other health authorities around the world. Complainant’s CIALIS product is available only on a physician’s prescription, and is manufactured, labeled, and sold in strict compliance with FDA and other health authority laws and regulations. No other product containing tadalafil, the active ingredient in CIALIS, has been approved by the FDA or any other health authority in the world. Respondent’s products at stake have not been approved by the FDA or, to Complainant’s knowledge, any other health authority in the world. The products sold on Respondent’s website are therefore illegal and potentially dangerous.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is in default in this proceeding.

6. Discussion and Findings

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate right or interest in respect of the domain names; and

- that the domain names have been registered and is being used in bad faith.

The Respondent may demonstrate that it has rights or legitimate interests in respect of the domain name by proving those circumstances identified in Paragraph 4(c) of the Policy.

Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.

Paragraph 15(a) of the Rules states that the Panel is to:

“decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant is, according to it’s trademark Registration Certificates, the owner of numerous CIALIS marks throughout the world, and especially in the United States and Canada and therefore has established rights in the CIALIS mark. At a minimum, that mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). As a result, the Complainant has provided sufficient evidence of its rights in the mark CIALIS.

The disputed domain names are confusingly similar to the distinctive mark as they incorporate the mark in its entirety. Respondent’s addition of the words “apcalis” or “viagra” to the disputed domain names does not eliminate the confusing similarity, because the additional words do not distinguish the owner of the disputed domain names from the owner of the mark. To the contrary, the additional words, which are also protected mark applied to the same goods, refer back to CIALIS by suggesting an association with the owner of the mark, and thus reinforce the disputed domain name’s confusing similarity to the mark.

A domain name that incorporates a complainant’s mark in its entirety may be confusingly similar to that mark despite the addition of other words. It is well acknowledged that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Pfizer Inc. v. Capital Market Advisors LLC, WIPO Case No. D2004-0733 quoting in particular Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>).

However, the domain names <cialisapcalis.com> and <cialis-viagra.info> contain not only the Complainant’s mark CIALIS but also the marks APCALIS and VIAGRA which are held by third parties. At least, the mark VIAGRA can be considered as a well-known mark. A number of WIPO Panels have considered domain names that consist of a Complainant’s mark and a third party trademark and have concluded that such domain names are confusingly similar to either mark, Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 quoting Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793.

In the light of the fact that the Complainant and the third parties may be considered as competitors, Internet users could presumably assume that the disputed domain names were authorized by the third parties. The Panel underlines that the Complainant has not provided any document showing an authorization or a letter of support from the owners of the APCALIS mark, nor of the VIAGRA mark. Besides, the other mark holders concerned have not come together and jointly filed a Complaint with the Complainant (Allianz AG and Dresdner Bank AG v MIC, WIPO Case No. D2001-1298).

The Panel is of the opinion that it is obvious that the contested domain names <cialisapcalis.com> and <cialis-viagra.info> incorporate entirely in the mark CIALIS but said domain names contain also respectively an additional mark one of which is well-known (VIAGRA), causing the Complainant’s trademark to appear less distinguishable in the domain name as a whole.

Nevertheless, according to previous Panel decisions, a domain name consisting of more than one famous trademark may satisfy the requirement in Paragraph 4(a)(i) of the Policy and thus be held to be confusingly similar.

The Panel concludes that the Respondent’s domain names are confusingly similar to Complainant’s CIALIS mark in which the Complainant has rights even if the contested domain name also contains the third parties marks APCALIS and VIAGRA.

The Panel finds that Policy 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c)(i) provides that a use is legitimate if, before any notice of the dispute, Respondent used, or has made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondent has not contested the Complainant’s declaration that the Complainant has not licensed, authorized or otherwise permitted the Respondent to use the domain names or the trademark CIALIS. Besides, the Respondent has not objected to the Complainant’s claim that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Complainant has also submitted extracts of the web pages to which the disputed domain names relate. Both domain names purport to give information about buying CIALIS online, and provide links to online pharmacies promoting generic versions of Cialis (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).

In a similar case, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, the Panel stated:

“Respondent is offering for sale not only the Complainant’s genuine product, but also a generic competitor. It is therefore using a domain name confusingly similar to the Complainant’s trademark to attract customers, who are then offered the choice of the Complainant’s product, and a competing product at a lower price. The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell a competing product in this manner deprive the Respondent’s offering of services of the “bona fide” character required to satisfy paragraph 4(c)(i) of the Policy. (A number of previous Decisions have reached a similar conclusion: see, for example, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (February 22, 2001); National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (December 10, 2000)).”

The Complainant has provided evidence that Respondent is using the contested domain names to direct Internet’s users to online pharmacies where products passed off as Complainant’s CIALIS products can be purchase. The Respondent is affiliated to a program enabling an affiliate party to direct Internet traffic to its website in order to earn a percentage of every customer order placed. As a result, Respondent is using the domain names for commercial purpose.

Furthermore, the Respondent is not commonly known by the contested domain names. Besides, Respondent has no prior business association with Complainant.

In the absence of any response from the Respondent providing any evidence to support any other possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain names, the Panel concludes that the Respondent has no legitimate rights or interests in respect of the domain names.

The Panel finds that Policy 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel is of the opinion that the fact that Respondent is trading on the Complainant’s goodwill in the mark, for commercial purpose, is evidence of bad faith.

Besides, the disputed domain names are dedicated to attracting Internet users to online pharmacies in the belief that they have some connection with the Complainant’s trademark as to source, affiliation or endorsement, when in fact there is no such connection. In addition, the websites contain no disclaimer of any such connection. In fact, the Panel finds that the Respondent’s intention was to create a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement in order to attract customers for commercial gain (paragraph 4(b)(iv) of the Policy).

Respondent is using the contested domain names in a way that is potentially harmful to the consumers’ health. In fact, Respondent’s website creates the false impression that those who purchase pharmaceutical products from Respondent’s website are buying safe and effective products from Complainant that have been approved by health authority laws and regulations. Complainant contends and it is not contested by Respondent that Complainant’s CIALIS product is available only with a physician’s prescription, and is manufactured, labelled, and sold in strict compliance with US Food and Drug Administration (FDA) and other health authority laws and regulations. The products sold on Respondent’s website are therefore illegal and potentially dangerous.

Accordingly, for the reasons discussed above, the Panel finds that the disputed domain names have been registered and is being used by the Respondent in bad faith.

The Panel finds that Policy 4(a)(iii) has been satisfied.

D. Remedy Requested

Complainant has not submitted authorization from the holders of the APCALIS and VIAGRA marks to relieve potential concern that transfer of the disputed domain names to Complainant would interfere with the rights of the third party trademark holder.

The Panel considers that the transfer of names <cialisapcalis.com> and <cialis-viagra.info> would violate third parties rights. In the absence of a letter of support from the owner of the marks or a co-action, the transfer is not the appropriate remedies (Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions, WIPO Case No. D2003-0725).

The Panel finds that cancellation in the present case is the relevant remedy.

7. Decision

For all the above mentioned reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <cialisapcalis.com> and <cialis-viagra.info> be cancelled.

Nathalie Dreyfus
Sole Panelist

Dated: December 20, 2004